European unitary patent: the ECJ rejects two actions filed by Spain

With two very recent judgments – in cases C-146/13 and C-147/13 – the European Court of Justice (ECJ) put an end to Spain’s hopes of obtaining the annulment of EU Regulations no. 1257/2012 of the European Parliament and no. 1260/2012 of the Council of Europe in the matter of European unitary patents. The relevant actions – filed by the Spanish Government in 2013 – were in fact entirely rejected by the ECJ, which basically approved the reasoning that Advocate General Bot explained in his conclusions.

The main complaints made by Spain as to the lawfulness of the regulations at issue were based, inter alia, on the following grounds.

As regards Regulation no. 1257/2012, relating to the enhanced co-operation in the area of the creation of unitary patent protection, Madrid claimed that it infringed the values of the rule of law, as the administrative procedure preceding the grant of a European patent would not be subject to a judicial review ensuring the correct and uniform application of EU law and the protection of fundamental rights.

On the other hand, it also complained the lack of a legal basis for the contested regulation (considering it to be in conflict with Article 118 (1) TFEU) since this would not specify the acts against which the European unitary patent provides protection and because it would wrongly make reference to the applicable national law, in violation of the principle of the uniform protection of intellectual property rights throughout the Union.

In addition, with regard to the translation arrangements, Spain argued that the choice of only three official languages (English, French and German) by Regulation no. 1260/2012 violated the principle of non-discrimination on the ground of language, because the effect of that arrangement would be an unequal treatment of those who speak these languages and who, otherwise, are required to cover additional costs for the translation of documents relating to the European unitary patent.

The ECJ specifically refuted each of these grounds and rejected both Spanish appeals.

In particular, with regard to the first objection, the Judges showed that, having the unitary protection conferred on the patent a strictly accessory nature, the contested regulation cannot affect the uniform application of EU law since it “merely (i) establishes the conditions under which a European patent previously granted by the EPO (European Patent Office) pursuant to the provisions of the EPC (European Patent Convention) may, at the request of the patent proprietor, benefit from unitary effect and (ii) provides a definition of that unitary effect”, and because it “is in no way intended to delimit, even partially, the conditions for granting European patents — which are exclusively governed by the EPC and not by EU law”. 

In reference to the alleged conflict of this regulation with art. 118 (1) TFEU (its abstract legal basis), the Court pointed out that both the aim and content of Regulation no. 1257/2012 share the logic of Article 118 (1) TFEU. This could easily be verified looking at Recital 4 of the latter regulation, which specifically provides “the need to improve the level of patent protection by making it possible for undertakings to obtain uniform protection in the participating Member States and the need to eliminate costs and complexity for undertakings throughout the Union” and considering that “the designation of the national law of a single Member State, which is applicable in the territory of all the participating Member States – contrary to what the applicant claimed – helps to ensure the uniformity of the protection conferred by that patent”; such uniformity is no way damaged by the fact that the contested Regulation does not specify the acts against which the European unitary patent ensures protection.

Finally, on the issue of the alleged discrimination in the matter of translation arrangements the Court stated that, although it is undeniable that the regulation in question provides an unequal treatment of the official languages of the Union, this is certainly proportional, appropriate and does not go beyond the – legitimate – objective pursued: i.e. the need to make “access to the European unitary patent and the patent system as a whole easier, less costly and legally more secure”.  In light of this, there cannot be any discrimination on the ground of language. Indeed, it is very remarkable that the regulation at issue has provided mechanisms in favour of Member States who do not speak one of the three official languages of the Union: an example of this is the reimbursement (up to a specific ceiling) of translation costs for small and medium-sized enterprises who require patent protection in languages other than the official three.